Diane Duhaime
Partner

Connecticut

Email: dd@jordenusa.com
Phone: 860.392.5014
Fax: 860.392.5058

Diane Duhaime is the chair of the intellectual property and information technology practice areas. Ms. Duhaime has extensive experience with drafting and negotiating software license, content license, software development, outsourcing, web site development, application service provider products, consulting services and many other types of agreements concerning technology products and services. Ms. Duhaime regularly advises clients on trademark, domain name, unfair competition, trade secret, copyright, Internet and e-commerce issues. In addition, she has counseled insurance institutions regarding advertising injury claims and coverage litigation. Ms. Duhaime represents clients from the financial services, retail, publishing, university and other industries in the selection, clearance, registration and maintenance of their trademarks and service marks in the United States and foreign countries. Ms. Duhaime's trademark work also includes enforcing and defending the client's trademark, service mark and domain name rights.

Ms. Duhaime's technology-related transactional experience includes agreements with software licensors and developers for private labeling web sites, and for web-based applications that provide, among other features, financial account information, tracking and reporting, portfolio management, electronic-based insurance and annuity application form completion, submission and processing, distance learning university level courses, enterprise-wide intranets and real estate mortgage loans and closings. In addition, Ms. Duhaime has been involved in virtually every aspect of technology acquisitions, from developing and issuing the request for proposal, to evaluating submitted proposals and participating in the client's vendor selection process, to drafting and negotiating the transactional documentation through execution of the transactional documentation. Ms. Duhaime also counsels clients with regard to any post-contract execution issues that may arise between the parties, including failed system and other non-compliance issues.

Representative Matters

• Successful representation of a client in a lawsuit filed against a foreign-based company that had registered and was using an Internet domain name identical to the name used by our client since 1996. The panel of arbitrators ordered the owner of the infringing domain name to transfer ownership of the domain name to our client.
• Successful representation of clients in prosecuting applications for trademark registration in the U.S. and foreign countries and in enforcing trademark rights against third parties by asserting various causes of action, including cybersquatting, typosquatting, initial interest confusion, infringement and dilution of famous trademarks. Also, successful representation and defense of clients when accused of infringing or otherwise violating another's trademarks or copyrights.
• Counsel to financial services clients in negotiating application service provider agreements for customization, implementation, hosting and support of web-based applications that perform or facilitate such functions as financial account aggregation and reporting, portfolio management, policy sales, policy issuance and policy administration for broker-dealers, registered representatives and/or customers. Financials of smaller, specialized licensors were a significant consideration in the drafting and negotiating of the transactional documentation.
• Providing counsel to financial services and other clients regarding web site terms and conditions of use and service, privacy policies, the validity of electronic signatures and enforceability of electronic agreements (such as shrinkwrap and click-wrap agreements), and the development of procedural guidelines to ensure same.
• Providing counsel to financial services client in preparing for litigation against the vendor that developed and supported a mission-critical insurance processing system, which system was substantially failing to meet the client's specifications (negotiated the resolution of this dispute to the client's ultimate advantage).
• Successfully defeated an emergency motion for a temporary restraining order that was filed in a federal district court in Connecticut to prevent the client from opening a new restaurant under a disputed trademark.

Speeches and Publications

• Moderator: Trademark Licensing Issues Roundtable, International Trademark Association, Simsbury, CT, October 13, 2005
• Speaker: Outsourcing: Near-Shore and Offshore and IT Contracting Issues in the New Millennium, ICN Technology Procurement Conference, New York City, July 22, 2004
• Speaker: Contract Negotiations: Indemnification, Limitation of Liability and Confidentiality Provisions, Minneapolis, MN, June 24, 2004; Boston, MA, November 6, 2003; New Brunswick, NJ, October 8, 2003; Hartford, CT, March 20, 2003
• Speaker: Offshore and Near-Shore Outsourcing: Addressing Key Issues, Hartford, CT, May 13, 2004
• Moderator: Madrid Protocol and Community Trademark Roundtable, International Trademark Association, Simsbury, CT, January 21, 2004
• Speaker: Legal Issues with Music Downloading, WTIC 1080 LawTalk Radio, Hartford, CT, September 20, 2003
• Speaker: Advanced Contract Negotiations: Indemnification, Limitation of Liability and Warranty Provisions, United Nations Procurement Division, New York, NY, June 27, 2003
• Speaker:Top Ten Legal Issues in Cyberspace: What Every Connecticut Lawyer Needs to Know, Connecticut Bar Association Annual Meeting, New Haven, CT, June 16, 2003
• Speaker: Gaining Your Terms and Conditions; Basics of Intellectual Property Law; Tales from the Clickwrap Crypt; UCITA Update, Technology Procurement Conference, San Francisco, CA, May 30, 2003
• Speaker: Commercial Issues in Energy Operations Cyber Security, KEMA Consulting, Denver, CO, April 9, 2003
• Speaker: Technology and Intellectual Property Law Issues, WTIC 1080 Law Talk Radio, Hartford, CT, January 11, 2003
• Speaker: Legal Issues of the Internet - Patents, Copyrights, Trademarks and Domain Names, Quinnipiac University, November 19, 2002
• Speaker: The Connecticut Uniform Electronic Transaction Act ("CT UETA") - Electronic Contracts, Signatures and Records: The New Law and Its Implications for Connecticut Attorneys and Their Clients, The Hartford Club, October 29, 2002
• Speaker: Legal Developments in Electronic Contracting, Practising Law Institute's Sixth Annual Internet Law Institute, NYC, July 15-16, 2002
• Speaker: Emerging Legal Issues in E-Commerce - Patents, Copyrights, Trademarks and Domain Names, Lally School of Management and Technology, Rensselaer Polytechnical Institute, June 15, 2000, March 21, 2001 and March 25, 2002
• Moderator: Trademark Policies, Enforcement, Prosecution and Other Trademark Topics, International Trademark Association, Annual Meeting 2002, Washington, D.C., May 20, 2002
• Speaker: Legal Developments in Electronic Contracting, Practising Law Institute's Fifth Annual Internet Law Institute, NYC, July 10, 2001
• Speaker: Current Online Privacy Developments, Hartford, CT, May 15, 2001
• Speaker: What Do E-Commerce Clients Expect from their Attorneys?, American Bar Association Young Lawyers Division and the Connecticut Bar Association Young Lawyers Section, Northwest Regional Conference, Mystic, CT, March 17, 2001
• Speaker: Naughty Net Surfing, Egregious E-mail & Web Woes: What Do You Advise Your Clients and Your Employees - Review Prophylactic Polices & Legal Implications, Hartford County Bar Association, Hartford, CT, March 1, 2001
• Speaker: E-Commerce In Banking - Network Security, Patents, Copyrights, Trademarks and Domain Names, Connecticut Bankers Association, Cromwell, CT, April 26, 2000
• Speaker: Our Clients are Conducting Business on the Web - Are You Giving Them "Yellow Pages" Advice?, Hartford County Bar Association, Hartford, CT, March 16, 2000
• Speaker: Internet Basics for the Connecticut Attorney, National Business Institute, Hartford, CT, January 26, 2000 and April 5, 2001
• Speaker: Trademark Registration Practice, Trademarks in Cyberspace II, International Trademark Association, San Francisco, CA, October 5, 1999
• Speaker: Intellectual Property Law - Protecting the Company's Ideas and Inventions, General Counsel Conference, NYC, June 15, 1999
• Speaker: Corporate Policies for Internet E-mail and Web Usage, Boston, MA, May 3, 1999, Hartford, CT, May 6, 1999
• Speaker: Email, the Internet and Confidentiality, Stamford, CT ,April 15, 1999
• Speaker: Commercial General Liability Insurance and Intellectual Property Coverage Disputes, Connecticut Bar Association, Wallingford, CT, December 6, 1995
• Contributing Author: Does My Company Need to Conduct a Trademark Search Before Using a Trademark or Domain Name?, Legal Horizons, Vol. II, 2004
• Author: Risk Assessment Considerations in Offshore Outsourcing, Legal Horizons, Vol. II, 2004
• Co-Author: United States; Heard the News? - European Community Joins the Madrid Protocol, Mondaq, July 20, 2004
• Contributing Author: Does the CAN-SPAM Act Apply to My or My Clients' Businesses?, The SciTech Lawyer, Volume 1, Issue 1, pgs. 14-15, Summer 2004
• Co-Author: An Overview of the CAN-SPAM Act of 2003, Connecticut Lawyer, Volume 14, Number 5, February 2004
• Co-Author: The Spam Battleground, Connecticut Lawyer, Volume 14, Number 1, August/September 2003
• Author: No Victory for Victoria's Secret at U.S. Supreme Court, Connecticut Lawyer, Volume 13, Number 8, May 2003
• Author: UCITA, UETA, and E-Sign, Including Recent Amendments to UCITA, Computer Law Reporter, Volume 36, Number 3, November 2002
• Author: Uniform Computer Information Transactions Act ("UCITA"), Uniform Electronic Transactions Act ("UETA"), and Federal Electronic Signatures in Global and National Commerce Act ("E-Sign"), Practising Law Institute's Sixth Annual Internet Law Institute, Volume Two, July 2002
• Author: Legal Developments in Computer and Electronic Contracting: Uniform Computer Information Transactions Act, Practising Law Institute's Fifth Annual Internet Law Institute, Volume Two, July 2001
• Author: Site Operators Must Obtain Parental Consent, The Connecticut Law Tribune, December 4, 2000
• Author: Registering Domain Names as Federal Service Marks and Trademarks, e-Commerce Law & Strategy, Vol. 16, No. 12, April 2000
• Co-Author: The Old Boat of Copyright Law; Still Afloat in the Digital Sea, The Connecticut Law Tribune Intellectual Property Magazine, July 26, 1999
• Contributing Author: Nationwide Survey on Unconventional Trademarks, ABA Intellectual Property Law Section, April 1998
• Contributing Author: Misappropriation of Trademarks, Personality and Rights of Publicity, Connecticut Bar Association, June 1997
• Contributing Author: Nationwide Survey on Trademark Dilution, ABA Intellectual Property Law Section, April 1997
• Author: It's Fair Use, Isn't It?, The Connecticut Lawyer, Vol. 5, No. 8, May 1995